Ex Parte Volk et al

Patent Trial and Appeal Board

Sep 26, 2018

13510314 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/510,314 07/10/2012
2101 7590 09/28/2018
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Andreas Volk
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
3129D/137 8830
EXAMINER
DANDRIDGE, CHRISTOPHER R.
ART UNIT PAPER NUMBER
3752
NOTIFICATION DATE DELIVERY MODE
09/28/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS VOLK and ROGER DIRKSMEIER
Appeal2017-010056
Application 13/510,314
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andreas Volk and Roger Dirksmeier ("Appellants") 1 appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 13-26, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as FOGTEC Brandschutz
GmbH & Co. KG. Appeal Br. 3.
Appeal2017-010056
Application 13/510,314
THE CLAIMED SUBJECT MATTER
Claims 13, 24, and 25 are independent. Claim 13, reproduced below,
is illustrative of the claimed subject matter on appeal.
13. A fire fighting system installed in a railway vehicle, the fire
fighting system comprising;
a supply line for supplying at least one extinguishing
nozzle with extinguishing fluid;
at least one section valve arranged between the at least one
extinguishing nozzle and the supply line, wherein each of the at
least one section valve includes a signal processing unit
integrated in the section valve and having a processor for
controlling an adjustment unit of the section valve, wherein the
signal processing unit is electrically connected via a data
communication network to a central control unit, the signal
processing unit being configured to transmit and receive data via
the data communication network.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wehrle
Boyce
Breed
Sprakel
us 5,486,811
US 6,866,102 B2
US 2006/0212194 Al
US 8,590,631 B2
THE REJECTIONS
Jan.23, 1996
Mar. 15, 2005
Sept. 21, 2006
Nov. 26, 2013
I. Claims 13-15, 18-21, and 23-26 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Boyce and Wehrle. Final Act. 2-6.
II. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boyce, Wehrle, and Breed. Id. at 6.
III. Claim 22 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Boyce, Wehrle, and Sprakel. Id. at 6-7.
2
Appeal2017-010056
Application 13/510,314
OPINION
Rejection I
The Examiner finds that Boyce teaches a computer based fire fighting
system. Final Act. 2. The Examiner also finds that Wehrle teaches "a
computer based fire fighting system" (id.) and concludes that it would have
been obvious "to replace the computer operated system of Boyce with that
disclosed by Wehrle" (id. at 4). The Examiner finds that Wehrle's computer
based system comprises "at least one section valve (324) [that] includes a
signal processing unit ( combination of 142, 144 and the processor within the
valve) integrated in the section valve." Id. at 2-3 (citing Wehrle: 8:42-51).
The Examiner more particularly finds that "[ t ]he section[] valves inherently
have a signal processing unit to process the control signal sent from the
processor." Id. at 3. The Examiner further finds that "the processor is
linked into the section[] valve and processes data received from the valve[]
and ha[s] a processor (130) for controlling an adjustment unit of the section
valve [324]." Id. ( citing Wehrle 8:42-51 ).
The "Examiner understands the Wehrle control unit [130] as a
computer, as it has memory, data circuits, and communication structure,
unique to computers." Ans. 3. The "Examiner takes the position that
considering this [is] a computer based system, the section[] valve must
inherently have a processor, capable of receiving the signal from the control
unit [130], and responding to the signal" and that"[ w ]ithout a processor,
there would be no means for the valve to be opened by means of the
computer signal." Id. at 4. The Examiner also points to language in Boyce
as being "indicative of a processor interpreting a command and responding
3
Appeal2017-010056
Application 13/510,314
accordingly," considering that Boyce's valves are "'commanded' to open by
the central computer system." Id. (citing Boyce, 2:60-67).
The Examiner acknowledges that section valves exist that "do not
include a processor, as part of their operational system" (e.g., valves
"controlled by a thermostat"). Id. at 5. The Examiner finds, however, that
"computers require receiving devices to have a processor, in order to accept
and respond to a signal/command" and because the Wehrle control unit 130
is a computer, "the Wehrle section[] valves (322, 324) include a processor to
receive and respond to the signals from the control unit (130)." Id.
Appellants maintain that "[t]here is nothing in Wehrle to suggest
anything special about the control signals to open or close the valves in the
fire extinguishment system 140." Id. at 1-2. Appellants assert that "the
control signal to each valve need only open or close the valve" and "[a]s
evidenced by the valves in the Submission, [2J these control signals are
regularly used to activate valves without any need for a processor at the
valve." Id. at 3. Appellants state that the "valves [in Wehrle] are each
connected to an individual control line 142" (id. at 2) and "[ n Jo reason is
given as to why a control signal sent to a valve over control line 142 cannot
be the electrical signal to which the conventional section[] valves disclosed
in the Submission are responsive" (id. at 3). Appellants acknowledge that
"Wehrle discloses a communication system for communications with the
detectors [110] and sensors [150, 152, 154, 156], [but assert that this] does
not teach away from using standard methods for sending electrical control
2 The Submission refers to "several spec sheets for section valves including
their schematics" that were "filed with the Office on October 28, 2016,
along with the interview summary." Appeal Br. 9.
4
Appeal2017-010056
Application 13/510,314
signals over the conventional control lines 142." Id. According to
Appellants, "[g]iven the absence of a data communication network
connected to the section valves, Wehrle would be read by one of ordinary
skill to include conventional section valves [ e.g., conventional actuators with
switches] lacking a processor." Appeal Br. 9.
The Examiner concedes that "Wehrle is silent as to the means by
which the control signal is converted into an opening of the section[] valve."
Ans. 4. That Wehrle's control unit 130 is a computer and that Boyce refers
to valves being "commanded" to open by a central computer system (see id.)
does not establish that Wehrle's section valves 322, 324 necessarily have a
processor to receive control signals sent by control unit 130 over control
lines 142 to valves 322, 324 to open or close the valves. As explained by
Appellants, section valves 322, 324 could have switches responsive to
control signals without any processor. Appeal Br. 9. We are not persuaded
that the Examiner has adequately supported that Wehrle inherently discloses
that section valves 322, 324 include a processor to receive and respond to
signals from control unit 130 sent over control lines 142 to open or close the
valves. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal
quotation marks and citations omitted) ("To establish inherency, the
extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill. Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.").
5
Appeal2017-010056
Application 13/510,314
Accordingly, the Examiner's conclusion of obviousness is based on an
erroneous finding as to the scope and content of Wehrle. 3
For the foregoing reasons, Appellants have shown that the Examiner
erred in concluding that the subject matter of claims 13, 24, and 25 would
have been obvious over Boyce and Wehrle. We do not sustain the rejection
of claims 13, 24, and 25, and claims 14, 15, 18-21, 23, and 26 which depend
therefrom, under 35 U.S.C. § 103(a) as unpatentable over Boyce and
Wehrle.
Rejections 11-111
The Examiner's rejections of claims 16, 17, and 22 rely on the
Examiner's erroneous finding that Wehrle inherently discloses that section
valves 322, 324 include a processor to receive and respond to signals from
control unit 130 sent over control lines 142 to open or close the valves.
Final Act. 6-7. Accordingly, we do not sustain, under 35 U.S.C. § 103(a),
the rejections of: claims 16 and 17 as unpatentable over Boyce, Wehrle, and
Breed; and claim 22 as unpatentable over Boyce, Wehrle, and Sprakel.
DECISION
The Examiner's decision to reject claims 13-15, 18-21, and 23-26
under 35 U.S.C. § 103(a) as unpatentable over Boyce and Wehrle is
reversed.
3 The Examiner's rejection does not address whether one of ordinary skill in
the art might have been led to include a processor at the section valves to
receive control signals sent by control unit 130 over control lines 142 to
valves 322, 324 in order to open or close the valves, and is based solely on
such a processor being inherent in Wehrle. See Final Act. 2--4; Ans. 3---6.
6
Appeal2017-010056
Application 13/510,314
The Examiner's decision to reject claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Boyce, Wehrle, and Breed is reversed.
The Examiner's decision to reject claim 22 under 35 U.S.C. § 103(a)
as unpatentable over Boyce, Wehrle, and Sprakel is reversed.
REVERSED
7